from the one-fish-two-fish-we-CAN-sue-fish dept

A little over a year ago, we wrote about an unfortunate case in which Dr. Seuss Enterprises decided to sue for copyright and trademark infringement over an attempt to create a (pretty funny) parody that mashed up Dr. Seuss with Star Trek, called "Oh, The Places You'll Boldly Go." As we noted at the time, this seemed to be a clear parody (which is protected by fair use). It was clearly transformative, and was commenting on the differences between Trek and Seuss. We also noted some extraordinary (and extraordinarily silly) claims in the lawsuit. The defendants in the case, Comicmix, won a round earlier this year, when the judge tossed out the trademark claims. However, he let the copyright claims stand for the time being. After, Dr. Seuss Enterprises filed an amended complaint on all the claims, leading to a new motion to dismiss.

Unfortunately, in a new ruling, the court has again denied the fair use claims on copyright, and also denied a new motion to dismiss on trademark grounds, meaning the case will move forward. And it's in large part due to the Muppets and a font. I only wish I were joking. You can read the ruling here. Since the court had previously done a copyright fair use four factors analysis, it mostly just points back to its previous ruling on the matter, but only adjusts its analysis of factor four -- the "effect of the use upon the potential market." The other factors split evenly (factor one in favor of Comicmix, factor two in favor of Seuss, factor three favoring neither).

So this ruling turns on what many courts (perhaps incorrectly...) believe is the most important factor: does this use harm the market for the copyright-covered work. Here, the discussion turns on whether or not this would undermine the Seuss Estate from licensing out its copyrights to someone to do a Star Trek mashup. Comicmix's argument is basically "come on, no one's doing that." Seuss's argument is "hey, look, we've done other mashups before"

Plaintiff states it has published “books that are derivative of [Go!]” such as Oh! The Places I’ll Go; Oh, Baby! Go, Baby!, and more.... Plaintiff states it also publishes a series of “books written and illustrated by other authors and artists that are based upon and incorporate the Dr. Seuss Intellectual Property” such as Oh, The Things You Can Do That Are Good for You!, There’s No Place Like Space!, Oh, The Pets You Can Get!, and more.... Plaintiff states “[n]otably, ‘Dr. Seuss’ does not appear on any of the [book] covers, and all of the covers include names of other authors, despite the fact that these works are authorized by DSE and are recognized by the public as Dr. Seuss works.”...

Defendants argue Boldly cannot cause any relevant market harm because Plaintiff’s licensed collaborations listed in the FAC are not works of Boldly’s type.... Defendants argue Plaintiff has not licensed and would not license “any derivate work that creates a hybrid of Dr. Seuss’s books with existing characters and imagery from a third party’s entertainment franchise. The first amended complaint does not give rise to a plausible claim that Boldly would cause any harm in any transformative market.” ... Defendants distinguish their mash-up from Plaintiff’s licensed derivatives and argue none of the books published as part of Plaintiff’s co-branding licensing program “are crossover works that integrate pre-existing characters or imagery from another entertainment franchise, such as Star Trek, with those of Dr. Seuss.”

The Seuss folks responded to this by pointing out that... they'd done a Muppets mashup with Seuss. Muppets!

Plaintiff argues it has in fact collaborated with others and created crossover works, such as through the creation of The Wubbulous World of Dr. Seuss, “a live action/puppet show produced by the Jim Henson Company featuring Dr. Seuss’s well-known and beloved characters alongside new, Muppet-like characters created by The Jim Henson Company.”

That apparently is enough to convince the court that Seuss might possibly, some day, find a market to produce mashup Seuss / Star Trek works:

Although these books may not be mash-ups like Boldly, there is a potential market for a literary mash-up involving Plaintiff’s books; such a market would not be unlikely based on Plaintiff’s past licensing programs. Defendant’s production of Boldly may result in an adverse impact on Plaintiff’s derivative market and the Court therefore finds there is potential harm to the market for Plaintiff’s derivative works. Therefore, this factor weighs in favor of Plaintiff.

With the amended complaint, the court also revisits the trademark claim... and allows it to move forward as well, reversing its earlier ruling. It finds that Seuss's trademark is valid here, and then says that Comicmix's use does not meet the standards for nominative fair use (in trademark law, that basically means did you just use the trademark to identify the thing that you're talking about). The real failing by Comicmix? Going a bit overboard in using the identical font in their title. Really:

Defendants not only use the words “Oh! The Places You’ll Go!” in the title of Boldly but also use the exact font used by Plaintiff. The look of the lettering is unquestionably identical on both books, down to the shape of the exclamation point. This situation is similar to that in Toho. The Court finds it was unnecessary for Defendants to use the distinctive font as used on Go! to communicate their message (i.e., that Boldly is a mash-up of the Go! and Star Trek universes). The Court concludes Defendants have not satisfied this nominative fair use factor.

I find this... puzzling. Again, the use of the font is the same issue as the use of the other Seussian design: to evoke the world of Seuss in which to land their parody.

So, Comicmix is 0-for-2 at this point -- and have the Muppets and a font to blame. Ouch.

This by no means that the case is over. It can still go through discovery and summary judgment and, then possibly a trial. And it's still possible that Comicmix could win -- but it's also going to be expensive to keep going.

In the meantime, I'm still left wondering why this is a good move by Dr. Seuss Enterprises. It's a beloved brand acting like a bully, pissing off tons of fans. Why not just let the Star Trek / Dr. Seuss fans have their fun for a bit and use the goodwill to sell more of its own books. I mean, I imagine the temptation among many people who would buy the mashup book would be to also get a copy of the Seussian original if they don't already own it. But, alas, in this day and age, so many organizations feel they have to go legal against everyone.

from the beam-me-mashup dept

Last year, Mike wrote about an interesting case between a small group of enterprising comic artists and Dr. Seuss Enterprises. Comicmix artists had created a parody mashup of Dr. Suess' Oh The Places You'll Go and the Star Trek universe to create Oh The Places You'll Boldly Go, a rather sweet take on both franchises. The creators of this new work setup a crowdfunding campaign, which the Dr. Seuss estate halted with takedown notices. The case ended up in court, with the Seuss estate claiming that the new work infringed both its copyright and trademark rights. The creators, along with Ken "Popehat" White, claimed all of this was well within the boundaries of Fair Use.

Well, the judge for the case has now ruled on the trademark matter, and it's a big win for Comicmix. Additionally, while the copyright claim survives for now, the judge makes it clear that things aren't looking great for that claim either.

Now, the United States District Court for the Southern District of California court has ruled on the trademark question and found that there is no valid trademark claim thanks to "nominative fair use," and also indicated that it would be favorably disposed to fair use defenses on the copyright question.

The estate has two weeks to prove copyright damages and to amend its trademark claims.

It's difficult to see how the Seuss Estate is possibly going to go about demonstrating copyright damages. Given the judge's review of the material and her analysis thus far on the copyright question, the copyright claim has a hell of a hill to climb. The Seuss estate argued that adjudicating the matter of Fair Use on the copyright claim at the motion to dismiss stage was inappropriate because of all the facts required to make that assessment. The judge didn't buy that, largely because the singular claim of harm made by the estate was the claim that it lost out on the opportunity to license the work at all.

As a threshold matter, Plaintiff argues that “while possible in rare instances to decide fair use at the pleading stage, it is inappropriate here, where significant material facts are necessary to make a determination of fair use.” (Opp’n 9.) However, the only genuine fact Plaintiff points to is that “the issue of whether the Defendants’ use . . . will appreciably harm the value of [Plaintiff’s] Works or . . . market simply cannot be made without discovery and further development of the record on this issue.” (Id. at 15–16.) And Defendants point out that Plaintiff’s sole allegation of market harm is that Defendants “usurped DSE’s licensing opportunities.” (Reply 4 (citing Compl. ¶ 32).) Thus, as long as the Court takes Plaintiff’s allegation of market harm as true, Defendants are otherwise correct that “[t]he complaint, and documents sufficiently referenced therein or otherwise subject to judicial notice, are sufficient to enable the Court to evaluate the issue of fair use.” (MTD 6.) In particular, the Complaint itself raises the issue of fair use, (Compl. ¶ 35), and the contents of the two primary books and other relevant works are before the Court and not in reasonable dispute, (RJN Exs. 5, 6).1 Accordingly, the Court concludes that fair use analysis is appropriate on this Motion to Dismiss and addresses each factor in turn.

As a bonus, the judge also acknowledges that mashup art is an emerging medium and states that bending to the claim by the Seuss estate would effectively kill off an entire form of art.

This case presents an important question regarding the emerging “mash-up” culture where artists combine two independent works in a new and unique way. See, e.g., Art Term, Postmodernism, Tate, http://www.tate.org.uk/art/art-terms/p/postmodernism (last visited Apr. 28, 2017) (“Often mixing different artistic and popular styles and media, postmodernist art can also consciously and self-consciously borrow from or ironically comment on a range of styles from the past.”). Applying the fair use factors in the manner Plaintiff outlines would almost always preclude a finding of fair use under these circumstances. However, if fair use was not viable in a case such as this, an entire body of highly creative work would be effectively foreclosed.

In other words, shuttering an entire art form is not the purpose of copyright law at all, hence this sort of Fair Use defense. It's as eloquent a nod to why creativity ought not be stifled in favor of protectionism as I've seen in a court document and should be required reading for any judge ruling on matters of Fair Use.

And so we wait for two weeks to see what, if any, documented claim of harm the Seuss Estate can work up for its copyright claim. I expect we will all be underwhelmed.

from the oh-the-places-you-shall-not-go dept

A few weeks back, Ken "Popehat" White lit the famed Popehat Signal to seek pro bono legal help for the creators of a new Kickstarter project called "Oh The Places You'll Boldly Go" -- which was a parody mashup of Dr. Seuss and Star Trek.

As White wrote at the time, this seemed like a clear case of a big corporate bully -- Dr. Seuss Enterprises -- bullying a small group of artists having some fun, creating a parody that was almost certainly protected by fair use.

I believe this project is protected by Fair Use. Under the first relevant factor, it's "transformative," in that it adds a new message or meaning to Dr. Seuss's work. It doesn't merely offer a Star Trek episode in Dr. Seuss style; rather, it uses the style to comment on and contrast the Stark Trek and Seuss sensibilities and styles. With respect to the "substantiality" factor, the parody only uses Seuss's recognizable and oft-parodied style; it does not copy actual art or story lines. With respect to the last factor, the work doesn't harm the market for Seuss's work. In other words, people won't buy less Seuss because they bought this parody.

Either way, the Seuss people issued a takedown to Kickstarter that killed the crowdfunding campaign. The creators of the parody did get legal representation, and responded to Dr. Seuss Enterprises threatening counterclaims, and then also filed a counternotice with Kickstarter to get the campaign reinstated. Dr. Seuss Enterprises, rather than considering what thuggish bullies they might look like, decided to go ahead and sue last week, which they needed to do to keep Kickstarter from reinstating the project. You can read the whole ridiculous complaint yourself, if you'd like.

The lawsuit is claiming both copyright and trademark infringement (of course) along with unfair competition. The complaint includes a number of examples of what it calls the parody's "slavish copying" apparently not caring that that's kind of the point of a parody:

Somewhat ridiculously, the lawsuit is even using the fact that the parody creators admitted in the required "risks & challenges" section of their Kickstarter campaign page that they may get sued as evidence that they knew this was infringing:

On its Kickstarter page, Defendants admit that their blatant and willful infringement presents “Risks and challenges” to their project:

While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, there may be some people who believe that this might be in violation of their intellectual property rights. And we may have to spend time and money proving it to people in black robes. And we may even lose that.

Except, of course, if you actually read that, they don't admit that at all. They admit that some thuggish idiotic bullies who think copyright gives them more rights than it does may force them to waste time and money in court to prove fair use. And they were totally right about that.

Of course, this is not new territory for Dr. Seuss Enterprises. A few years back we had another story about it legally threatening another parody, which mocked how frequently "Oh The Places You'll Go" is read at graduations at a time when graduates were having more and more difficulty finding jobs.

Many people love Dr. Seuess books. And it's not like they're going out of style or hurting for cash these days. Decades after Theodore Geisel's death, Dr. Seuss books still absolutely and totally dominate the charts for children's book sales. I'll admit that my kids have a few on their bookshelf, but as long as Dr. Seuss Enterprises continues this kind of ridiculous bullying of perfectly reasonable parodies, I will never buy another Dr. Seuss book and recommend others do the same. Nothing good comes from rewarding giant enterprises that seek to stifle creative expression.

from the human-race-has-been-lost dept

When we discuss book bans, we typically discuss them in terms of being revolted by the myopic viewpoint of those doing the banning. For instance, Tim Cushing recently wrote about one book that was banned, despite being an award-winning novel, for including some fairly mild language dealing with sexuality and masturbation. In that case, some parents went to the police to keep teenagers from passing out the books anyway, as if some kind of school book ban had the force of law. That was, obviously, quite a silly situation.

But we shouldn't let this taint all book-banning activities. After all, some books are truly dangerous. Take the tome of violence-advocacy recently targeted for banishment by the Toronto library system, for instance, and see if you can't find it in your heart to admit that some books are too dangerous to be allowed.

Librarians at the Toronto Public Library were asked to remove copies of Dr. Seuss’ 1963 children's book "Hop on Pop” from the establishment’s collection because it allegedly promotes violence. A document detailing the seven books the library has been asked to remove over the past year was posted online on Monday.

The book “encourages children to use violence against their fathers,” according to the complaint.

Now, I know what you're thinking: "But, Tim, it's a harmless rhyming children's book. It isn't promoting violence!" Well, you're not fooling anyone. It seems pretty clear to me that this book, written by some guy named Dr. Seuss (probably a terrorist), is being actively promoted as a way to quite literally stomp out fathers. Think of the children.....that will never be born because other children are stomping on men's two-bits at the behest of some 1960's love-child Dr. of death! This will not stand!

The Materials Review Committee pointed out that the book is “humorous,” “well-loved” and that it has “appeared on many ‘Best of’ children’s book lists.” The MRC also pointed out that the children in the Pulitzer Prize-winning author’s book are actually told not to hop on pop.

Nobody's buying it, MRC. These are probably the same people that told us there were WMDs in Iraq and that 9/11 wasn't just a false-flag operation orchestrated by a zombie Hitler that's kept in an underground bunker beneath the Grand Canyon. You can't fool us. A tiny fraction of people in Toronto want this book banned, damn it.

Despite the complaint, the library opted to retain the book in the children's collection.

Does government overreach know no bounds? We say "don't tread on me," and they house this book that literally tells children (except it doesn't) to tread on their fathers? Canadians, write your Congressmen (or whatever it is you call them up there). Something must be done.

But more interesting from our standpoint are the copyright questions this raises. Some even pondered if his reading the book on the Senate floor would impact the public domain status of the book. The answer to that is no, though some other questions may be a bit more obscure. I've emailed some copyright lawyers for their take on the question, but we might as well discuss them here in the comments. The book is clearly covered by copyright. Cruz's reading of it is likely protected by the speech or debate clause, and even potentially a fair use claim. The bigger question is about everyone else who's showing it. Are TV news programs who show it violating the copyright? It may depend very much on how they present it, and it seems likely that many would have a very strong fair use claim -- it's newsworthy (in some sense), it's unlikely to negatively impact the work, etc. Of course, if a TV program decided to use it, instead, as a "storytime hour with Senator Ted Cruz" in which he reads the book to entertain children... there might be some copyright questions raised. Still, it's worth noting that the owner of the copyright, Dr. Seuss Enterprises, has a history of going legal over pretty clear fair use claims.

Still, there is a larger point in all of this: this is yet another example of a politician realizing that there's benefit in being able to use copyright covered material for his personal benefit, without the permission of the copyright holder. This is why fair use is important, and why attempts to limit it are so problematic. While I've never seen Senator Cruz involved in any copyright debates, but it will be interesting to see, should copyright reform issues ever finally reach the Senate floor, if he's willing to stand up for expanded fair use, based on his own recognition of the value of being able to, say, read an entire book to try to make a point.

from the blue-eggs-and-spam dept

One aspect of fair use that often confuses people is the distinction between parody (which is well-established as fair use in many circumstances) and satire (which is not). The basic distinction is that a parody that makes use of a copyrighted work is doing so to comment on that work, while satire that makes use of a copyrighted work is doing so to comment on something else. The legal reasoning is that in the former situation, use of the work is necessary because it is intrinsic to the commentary, but in the latter situation it is unnecessary because the same commentary could be made in another way.

Unfortunately, the distinction is not always so clear. Illustrator Danny Hellman recently discovered this after completing a series of illustrations in the style of Dr. Seuss for a book about declining job prospects for recent graduates, itself written in the Seussian style (and presumably inspired by the tradition of reciting Seuss' Oh, The Places You'll Go! at graduation ceremonies).

A few months into the project, (after I’d turned in about half of the book’s 80 or so illos) the publisher sent promo materials for the book out to retailers. Apparently, some wicked, Grinch-like person felt compelled to pass these materials along to attorneys who work for the Ted Geisel [Dr. Seuss] estate, at which point this flock of legal carrion birds descended on my publisher much as the Onceler clan does on a newly-discovered forest of virgin Truffula trees.

Okay, enough of the Seuss metaphors. Suffice to say that my publisher was hit with a Cease & Desist letter, and the project was killed, in spite of our well-established First Amendment right to commit parody.

While I'm sure that the estate would have sent a C&D no matter what, in this case the parody defence is likely not as strong as Hellman assumes, because the book was not commenting on Seuss and his work, but rather on an unrelated topic, making it more satire than parody. There's also the possibility that trademarks are involved, which would be a different story, but without actually seeing the C&D it's hard to say. Assuming, as Hellman suggests, copyright is indeed the core issue, this situation is comes down to an even more fundamental question: can an artist's "style" be protected by copyright? Let's take a look at one of the images in question:

Yes, it is distinctly Seussian, but it does not replicate or make use of any of Seuss' actual work. This is an example of the failure of the idea/expression dichotomy that is supposed to be central to copyright law. In theory, ideas are not covered by copyright, only the fixed expression of those ideas, but while some argue that the distinction is clear and obvious, the fact is that's rarely the case. An artist's signature style is, in one sense, a part of the specific expression, but in another sense it is a collection of artistic ideas that dictate expression. If style can be protected, it creates a problematic double standard: could someone, for example, get away with reproducing a Seuss book in full using a different style of art and writing? Unlikely. But if they also can't tell a different story using the Seussian style then... suddenly there is no "idea" side of the dichotomy at all.

The real issue is that it's highly subjective, creating situations where judges must play art critic to determine if something is infringing. So a book like this can easily be killed by a C&D, since the publisher isn't going to risk a lawsuit when they have no clear standard telling them if the work is infringing. That creates a massive chilling effect on art, and gives rightsholders too much power to squash anything they don't like, with or without a firm legal basis.

Lack of clarity on key concepts like parody/satire and idea/expression is one of the biggest problems with copyright law today. When artists have no way of knowing whether something is infringing, it limits their creativity, and everyone is worse off. A firm, clear definition of the idea/expression dichotomy (and one that errs on the idea side, as was always the intent, since fair use is supposed to be what stops copyright from violating freedom of speech) would go a long way towards fixing a broken law.

from the no-whoville-in-lousville dept

Thanks to both Eric and Gunnar who simultaneously sent in the news of lawyers representing Dr. Seuss's estate who threatened the town of Louisville, Kentucky with a lawsuit if they didn't stop a planned "How the Grinch Stole Christmas"-themed celebration as a part of its Light Up Louisville holiday event. The lawyers pointed out that the characters are copyrighted, and could not be used. Legally, they may be correct, but as Louisville Mayor Jerry Abramson pointed out: "It appears these lawyers' hearts are two sizes too small." Given the very subject matter, and the joy which Dr. Seuss stories bring to kids, you would have thought that the lawyers might think twice on this one. Apparently not. I'm sure that all the Grinch-themed aspects of the celebration probably would have made new Seuss fans out of many kids, but apparently, Dr. Seuss' estate would prefer that not happen.